Patent Decisions

In this case, Abbott and Takeda brought a summary judgment motion as against Apotex, to dismiss the
s. 8 proceeding in its entirety. As a preliminary matter, the Court held that the issues raised in
the Applicant's factum were not enumerated in their Notice of Motion. The motion was restricted to
the elements in the questions as originally posed: "(i) that Apotex' submission did not comply with
the FDA or FDA Regulations when it was filed, and it was not compliant as of April
2007; and (ii) in the absence of the NOC Regulations, the FDA and FDA Regulations did
not permit an Apo-lansoprazole NOC to be issued in April 2007. Therefore, no NOC could or would have
issued to Apotex at that time in the absence of the NOC Regulations." (para 48)

The Court enumerated the law that applied to summary judgment motions in Ontario. It then considered
the evidence. In this case, Apotex had received a Patent Hold letter. It then received correspondence
revoking that letter and indicating that Apotex' Apo-lansoprazole product was no longer considered
approvable. Additional bioequivalence studies, using different diet conditions, were needed. When those
were submitted, bioequivalence was not demonstrated. The matter was referred to the Scientific Committee
on Bioavailability and Bioequivalence, which recommended against approval. Health Canada issued a NON-W.
Apotex used Health Canada's Reconsideration Process, which resulted in a finding that Apo-lansoprazole
was cleared for sale. After the expert panel's recommendations, Health Canada spent another month reviewing
the product and recommending descriptive changes to the usage circular and descriptions of the product.
An NOC was then issued. The Court emphasized that this was the exact same product that had received
the original Patent Hold letter.

The evidence before the Court was that an NOC would have issued at the first Patent Hold letter, but
for the NOC Regulations. Furthermore, Health Canada's subsequent actions in relation to the request
for further studies, would not have resulted in the revocation of that NOC. The Court made a finding
that the issuance of the Patent Hold letter "definitively establishes that a NOC for the generic product
not only could have, but would have been issued on April 17 or 18, 2007" but for
the litigation under the NOC Regulations. The Court also stated that it was not persuaded that Apo-lansoprazole
was not legally approvable as of that time. The Court held that the Applicant's position on the summary
judgment motion was without factual or legal foundation or merit.

The Court also considered the Applicants' arguments that the FCA's decision in Apotex v. Canada
(Health), 2012 FCA 322 [Omeprazole FCA] should apply in this situation.
However, the Court distinguished the statements by the FCA as arising in a different contextual circumstance.
The question of whether a generic is entitled to s. 8 damages is entirely separate from whether the
Minister's decisions arising out of the drug approvals process may be challenged. A patentee does
not have standing to impugn decisions made under the FDA Regulations. The Court further
distinguished Omeprazole FCA on its facts.

Thus, the Court dismissed the motion for summary judgment. The Court further held that its findings
were applicable on the merits. The Court held that the facts of the case plainly establish that Apotex
has a s. 8 claim, and the question is about quantum. In addition, the Court held that due to its findings
with respect to Omeprazole FCA, the Applicants will not be permitted to revisit avenues relating
to the conduct of Health Canada. The Court appointed himself trial judge and narrowed the questions
for trial.

Copyright Decisions

Nintendo has been awarded an injunction, $11,760,000 in statutory damages and $1,000,000 in punitive
damages for the trafficking of infringing devices that were alleged to allow the use of pirated games
in Nintendo DS, 3DS and Wii video game consoles. These devices included mod chips and game copiers
designed for use with downloaded ROMs.

The following was ordered against the Respondent Go Cyber Shopping (2005) Ltd. The individual respondent
had reached a settlement agreement on all issues, including liability and quantum of damages, before
the end of the hearing.

The Court found copyright in the Header Data for each of the three game systems, as well as the video
games themselves. The Defendant was said to provide the directions on how to copy or download the Header
Data if it was not already provided with the device. This was found to be either primary or secondary
infringement of the copyright held by Nintendo.

The Court considered what is meant by the definition of a Technological Protection Measure in the
Copyright Act, and held that access control TPMs do not need to employ any barrier to copying in order
to be effective. Therefore, the physical configuration of Nintendo's game cartridges, including the
shape of the card and the arrangement of the electrical pins, was held to be a TPM. The boot up security
checks, encryption/scrambling, format and Wii Copy Protection Codes were also held to be TPMs.

The Court disregarded arguments seeking to narrow the meaning of "circumvent" when applied to
TPMs, and held that the game copiers circumvent the physical configuration TPM. The game copiers were
also found to circumvent the boot up security check TPM and the encryption/scrambling TPM. The Wii
TPM was found to be circumvented by the use of mod chips.

The Respondent raised a "homebrew" affirmative defence, arguing for the interoperability of computer
programs and the potential availability of homebrew software. The Court held that the primary purpose
of the Respondent's devices is to play pirated copies of Nintendo games, and that the Respondent did
not meet its burden of establishing the exemption.

The Court awarded the maximum of $20,000 in statutory damages per work, which was found to be 585
Nintendo games and the three header data works. In doing so, the Court noted that actual infringement
of copyright is not necessary for an award of statutory damages for TPM circumvention. It was also
held that the damages would not be assessed per TPM circumvented, but rather per work infringed.

Punitive damages were also awarded, to reflect the objectives of retribution, deterrence, and denunciation.
The Court held that the Respondent knowingly and deliberately sold circumvention devices, promoted
such activities to its customers, had done so for years and operated under a misleading unregistered
business name. The evidence also suggested plans to expand to Nintendo's next generation of game consoles.

In this petition, the Supreme Court of British Columbia found the corporate respondent liable for
damages for breach of copyright based on the unauthorized use of architectural plans and drawings in
respect of an apartment development.

The petitioner, a small architectural firm, had originally prepared the plans for Murray's Walk Development
Ltd ("MWDL"), a developer who later went bankrupt and failed to pay all of the petitioner's fees.
MWDL's property, including the lands and the plans for the project, was sold to the corporate respondent,
a second developer, in the course of foreclosure proceedings.

There was no dispute as to the ownership of copyright in the plans. Rather, at issue was whether the
corporate respondent had acquired MWDL's right to use the plans by virtue of having purchased all of
MWDL's property in the foreclosure proceedings.

The Court concluded that the consent given to MWDL for the use of the drawings was conditional on
payment of the petitioner's fees in full. The licence ended when payment was not provided. The Court
found that the terminated licence was not capable of being transferred to the respondents, who as a
result used the drawings without consent. The Court noted that even if the licence did transfer to
the respondents, the petitioner revoked its consent or alternatively, the licence was conditional on
payment in full which was never provided. In either case, the respondents would have used the drawings
without consent.

The Court disagreed with the respondents claim that the petitioner was estopped, by issue estoppel
or cause of action estoppel, from seeking the relief sought in this petition because it was a respondent
to the foreclosure proceedings but decided not to object to the relief sought at that time. The Court
found that the issue raised in these proceedings was not addressed in the foreclosure proceedings.

The Court noted that there was no clearly established practice on how to assess damages in this context.
The Court awarded in the amount the corporate respondent would have been required to pay the petitioner
in order for individual respondent to provide services based on the drawings. The Court concluded that
damages should not be awarded against the individual respondent, finding that he was in a difficult
position and appears to have acted in good faith.

Trademarks Decisions

The Court dismissed the corporate Third Party's motion opposing the execution of a Writ of Seizure
and Sale and seeking various other types of relief. The Plaintiff opposed the motion on the basis that
the Third Party is being used by Joseph Nassar and Jean-Pierre Nassar (the "Two Individuals")
for the improper purpose of thwarting a Default Judgment issued against the Defendant, after it was
found to have infringed the Plaintiff's rights in certain trademarks.

The Writ was executed at two locations formerly used by the Defendant to sell its products, and now
used by the Third Party to sell similar products. The Third Party sought to nullify and set aside the
seizure, on the basis that it legitimately owns the goods that were seized and it is not a party named
in the Writ. The Third Party submitted that the onus was upon the Plaintiff to meet the strict test
for lifting the corporate veil, to permit the Plaintiff to execute the Default Judgment against the
seized goods and the Third Party.

The Plaintiff submitted that the Third Party is under the complete control of the two Individuals,
and was incorporated for the sole purpose of evading the Default Judgment, and therefore, the Third
Party's corporate veil should be pierced. The Court agreed and concluded that the Plaintiff had met
the strict test for lifting the corporate veil to permit the Plaintiff to execute the Default Judgment
against the Third Party. The Court found that the evidence established on a balance of probabilities
that the Third Party is the "alter ego of its principals, Joseph Nassar and Jean-Pierre
Nassar". The evidence also established, inter alia, that the business was transferred
from the Defendant to the Third Party for the dishonest and improper purpose of evading the Default
Judgment, and potentially other judgments, issued against the Defendant by this Court.

In this summary trial, the Court dealt with various issues relating to the termination of a Dairy
Queen franchise agreement, including the Plaintiff's claim for damages based on the tort of passing
off.

The Defendants had purchased the restaurant conducting business in the name of the DQ Grill & Chill
and had agreed to be bound by the terms and conditions of the franchise agreement with Dairy Queen
Canada, Inc., the Plaintiff. Ultimately, the working relationship between the Plaintiff and the Defendants
broke down. In August 2013, the parties executed a Mutual Cancellation and Release. The Release suspended
termination of the franchise agreement until February 1, 2014, allowing, inter alia , the
Defendants an opportunity to sell their business and recoup their investment. In January 2014, the
Defendants were advised that they were not operating in accordance with the terms of the Cancellation
and Release and were told that the Plaintiff was "accelerating" the Agreement's termination date
to January 8, 2014, in accordance with its terms. The Defendants conceded that they continued to operate
the DQ Grill & Chill until April 8, 2014; that they sold products representative of a Dairy Queen
franchise while doing so; and, that the premises were identified as a Dairy Queen.

On the issue of passing off, t he Defendants acknowledged that the Plaintiff had established the first
element of the tort of passing off, namely, the existence of "goodwill". The Court was also satisfied
that the second and third elements of the tort had been made out.

On the second element, the evidence established that the Defendants presented themselves as a Dairy
Queen franchise between January 8, 2014, when the Plaintiff terminated the Agreement, and April 8,
2014, when the Dairy Queen signage was removed from the premises.

On the third element of the tort, namely damages, the Court accepted that the Defendants' conduct
interfered with the Plaintiff's goodwill and drew an inference of damages as a result. However, the
Court determined that the period for assessing damages for passing off was shorter than that which
was held out by the Plaintiff. Based on the evidence, the Court found that the Plaintiff represented
to the Defendants that the last possible date for the DQ Grill & Chill to close and "de-identify"
as a Dairy Queen franchise was March 10, and not January 8, 2014. The Court awarded damages in the
amount of $8,500 for passing off in these circumstances, which represented approximately one third
of the amount sought by the Plaintiff based on a reduced time frame.